Letter of Consent may now be considered
One of the common reasons for rejection of a trademark application is similarity to a prior mark. In Indonesia, it used to be that even a letter of consent amongst related entities in the same group of companies was not accepted to overcome a citation. The Indonesian Trade Marks Office took the position that this strict approach was necessary to avoid confusion of having similar marks in the name of different entities crowding the register.
However, our recent discussion with the Trademark Examination team at the Trade Marks Office suggests that as a part of new trademark examination practice, the examiners are prepared to now consider a letter of consent when reviewing the response to an office action. Although there has been no formal notification from the Trade Marks Office, we have already seen some cases where citations were successfully overcome by filing arguments together with a Letter of Consent. Though not a definitive tool, this is a positive development and it is a pragmatic approach that brand owners can now consider to improve the chances in difficult cases.
Madrid Provisional Refusals deadline
Many clients have asked for clarification on the due date for responding to the Provisional Refusals. In the WIPO notification, the deadline to respond to the Refusal is 30 days from the date the provisional refusal is sent by the International Bureau. Under the Indonesian Trade Marks Law, ‘Day’ means working day. Therefore, the deadline for responding to the refusal in Indonesia is actually longer - 30 working days. As the law does not allow for any extension of time, this slightly longer period for responding gives brand owners a little more time to deal with the objection, especially in the current environment.
Trade Marks Appeal Commission
It has been more than 1 year since the Trade Marks Appeal Commission was reshuffled and 16 new members were appointed. Since then, we have seen progress in terms of turnaround time in issuing a decision - around 4-6 months for new appeals, compared to 12-18 months previously. The members usually hear about 30 cases a week - distributed amongst 3 members for each case, so the old backlog of appeals is starting to clear. The decisions also now focus on the substantive merits of the case, rather than technicalities. For example, in the past, if the cited mark had expired at the time of filing the appeal, the old Trade Marks Commission used to take the position that as the cited mark was valid at the time of office action, the rejection was correct, to the frustration of many brand owners. Now, we can successfully raise the argument that as the cited mark is no longer valid at the time of appeal, the initial citation objection should, therefore, be waved.
Currently, due to COVID-19, the physical counters of DGIP are closed until further notice. Any appeal deadlines will be extended to the next day when the DGIP counters re-open. However, since end April 2020, appeals can also be submitted online.
New Trade Marks Office Director
Lastly but importantly, we welcome the appointment of Mr Mohamad Aliamsyah, S.Sos., S.H., M.H. as the new director of Trade Marks and Geographical Indications with effect from 28 February 2020. Mr Mohamad was previously the Head of Data and IT centre for the Ministry of Law and Human Rights and his experience will be valuable to help the Trade Marks Office further automate its processes to meet the challenges, especially during these difficult times.
Please stay safe, and for more information feel free to contact us at jakarta@rouse.com or TMGIndonesia@rouse.com.
